Law and the Multiverse Retcon #8: Orphan Black…Again

This is the eighth post in the Law and the Multiverse Retcons series, in which I discuss changes in the law (or corrections in my analysis) that affect older posts.  Or older retcon posts, since not longer after I wrote this Orphan Black Retcon I saw Season 2 Episode 5, which further complicated matters.  Soon after that I received an email asking about it, and I knew I would have to write the first Retcon Retcon.  Spoilers ahead!

As you may recall from previous discussions, Orphan Black is (to greatly oversimplify) a show about human clones created by a corporation called Dyad, which claims to own the patent rights on those clones and thus the clones themselves and their biological offspring.

This is pretty much nonsense for a whole host of reasons, as I explained in my original post and expanded on in the first Retcon post.  But two of the reasons I gave in the original post were actually addressed in the show (no, I don’t think the writers read the blog; I suspect they have some consultants or did some research themselves).  I wrote:

[P]atents have a limited term, and they must be filed for within a certain time after an invention has been in public use.  The law on this varies from country to country and has varied over time as well, but the bottom line is that there is almost no way that Dyad can have a valid patent that covers Sarah and the clones in 2014.  Such a patent would either have to have been filed for in the 1970s at most a year after the clones were born (for a US patent), in which case it would be expired now, or it would have to have been filed for more recently, in which case it would be invalid.  It’s possible it could have been the result of a so-called submarine patent, but those are difficult to engineer, and in any case I don’t think that was ever really possible outside the United States.

Finally: patents are public.  The word patent literally means “open.”  If Dyad owned patents on a method for producing viable human clones (or on genetically engineered humans, or both) it would be public knowledge and a huge deal.  Certainly Cosima would be aware of it.

But then in S2E5 there is a brief suggestion that Dyad may have “secret military patents.”  In the previously mentioned email, Lorelei asked:

Do you have any idea whether it’s realistic that Dyad would have one, let’s assume under US law? Let’s leave aside the ban on patents that “encompass a human being,” which I think would still make a patent on the clones impossible. I’m more interested in how secret patents work generally.

“Secret patents” isn’t quite the right phrase, although that’s what the show called them.  It’s more accurate to say a patent application subject to a secrecy order.  Secrecy orders are provided for by 35 U.S.C. § 181, and I’ve talked about them before, specifically in regard to Wayne Enterprises and inventions used by Batman.  Secrecy orders have been available in their current form since 1951, but the history of classifying some inventions at the Patent Office goes back to at least World War I.  Thus, the timeframe fits, since the clones were created in the 1970s.

Secrecy orders can be granted when “the chief officer of a defense agency [notifies the Commissioner of Patents] that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security.” 37 CFR 5.2.  Note that secrecy orders can only apply to a patent application before the invention has been published or disclosed.  Once it becomes a patent it’s too late, since patents are public documents.  Instead, applications subject to a secrecy order are held in limbo until such time as the secrecy order is no longer needed, whereupon the patent examination process continues as normal.

The US has reciprocal secrecy programs with a large number of countries, including Australia, Belgium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Portugal, Republic of Korea, Spain, Sweden, Turkey and the United Kingdom.  Some secrecy orders (Secrecy Order and Permit for Foreign Filing in Certain Countries, aka Type I secrecy order) allow patent applications to be filed in those countries so long as a secrecy order has been granted in the foreign country as well.  Thus Dyad (apparently based in Canada) could file in many countries while maintaining secrecy.

In the show we get hints that the clone program at Dyad was taken over by the military (Project LEDA), which suggests that it may well have been possible for a secrecy order to have been granted on clone technology.  If the secrecy order was lifted at approximately the present day (e.g. because third party technology began to catch up to Project LEDA), then actual patents might start to issue on the technology around the world (ignoring the legal impossibility of patenting such a thing in the first place).

Thus, a secrecy order would solve the problem of explaining why nobody knew about the technology and why patents were still available on technology invented in the 1970s.  It still doesn’t make the patents valid, but it reduces the amount of suspension of disbelief.  However, Dyad would have to say “patent pending” not “patented” because secrecy orders only apply to patent applications, not issued patents.

Bonus Patent Law Quibbling: In the same scene the phrase “provisional patents” is used.  There is no such thing as a provisional patent (at least in the US), only a provisional patent application.  A provisional application is an application with a somewhat reduced set of filing requirements that is often used to “hold one’s place in line” by filing quickly and then filling in some of the details later.  By itself it will never become a patent.  It must be converted into a non-provisional application in order to be examined and potentially issue as a patent.

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